15 December 2005

Trade Marks: A Blast from the Past from the Land of Saints and Scholars

Before the phrase "Celtic Tiger" was coined, it was a standing joke that Aer Lingus captains would remind their passengers to set their watches back to the 1950s upon landing at Dublin or Shannon airports. Such jokes were at best silly and, in my view, in bad taste. Now that Dell, Microsoft, Dublin house prices and the common agricultural policy have propelled Irish GDP per head well ahead of our own they are just not cracked anymore.

But I got a tinge of nostalgia on reading Mr Justice Clarke's judgment in Metro International S.A. and others v. Independent News & Media plc [2005] IEHC 309 (7 Oct 2005). This was a motion for an interlocutory injunction - note not an application for an interim injunction - but a good old fashioned motion of the kind that I used to argue before the Vice-Chancellor of the County Palatine of Lancaster in Deansgate or, if I was really lucky, a Chancery Judge in the Thomas Moore Building in the Strand. This is pre- Human Rights Act, pre- Series 5 Software Limited v. Clarke [1996] FSR 273 and above all pre- CPR stuff. And, again IMHO, none the worse for that.

The issue was whether the powerful consortium of newspaper publishers who distribute the "Metro" freesheets in England and around the world should be granted an order restraining until trial the launch of a free newspaper in Dublin also by the name of "Metro". The plaintiffs relied on the registration of a trade mark "of a Metro device or stylised mark". The judge described the device as "a representation of the word Metro with the O depicted in the form of a globe".

Reviewing the case law on s.14 (2) of the Irish Trade Marks Act 1996 (which is substantially the same as our s.10 (2)) the judge noted that the above section had introduced a totally new concept into the definition of infringement namely the idea of "association" which was first considered in Ireland by Mr Justice McCracken J. in Smithkline v. Antigen Pharmaceuticals Limited [1999] 2 ILRM 1. After considering Sabel v Puma and subsequent case law his lordship concluded that there was a serious issue to be tried as to whether the above factors might lead the court to take the view, at trial, that there is a sufficient likelihood of confusion so as to meet the test for infringement and hence that there was a serious issue to be tried.

The judge then turned to the issue of the adequacy of damages and balance of convenience citing not Lord Dipliock's speech in American Cyanamid but more words of Mr Justice McCracken in B & S Limited v. Irish Autotrader Limited [1995] 2 I.R. 142 which appear to be of almost identical effect:

"1. An interlocutory injunction should be refused if damages would adequately compensate the plaintiff for any loss suffered between the hearing of the interlocutory injunction and the trial of the action provided the defendant would be in a position to pay such damages.
2. Should this test be answered in the negative an interlocutory injunction should be granted if the plaintiffs undertaking as to damages would adequately compensate the defendant should he be successful at the trial in respect of any loss suffered by him due to the injunction being in force between the date of the application for the interlocutory injunction and the trial, again assuming that the plaintiff would be in a position to pay such damages.
3. If damages would not fully compensate either party then the court may consider all relevant matters in determining where the balance of convenience lies but these will vary depending on the facts of each case.
4. It is normally a council of prudence, although not a fixed rule, that if all other matters are equally balanced the court should preserve the status quo.
5. Again where the arguments are finally balanced, the court may consider the relative strength of each parties case as revealed by the affidavit evidence adduced at the interlocutory stage where the strength of ones parties case is disproportionate to that of the other."


If and in so far as there is a difference between Lord Diplock and Mr Justice McCracken, the latter perceived it to be as follows:

"While Lord Diplock only used the phrase "balance of convenience" when considering the position if damages were not an adequate remedy for either party, I would be more inclined to the view that the entire test rests on a balance of convenience, but that the adequacy of damages is a very important element, and may frequently be the decisive element, in considering where the balance of convenience lies."

Mr Justice Clarke's judgment was a very careful balancing of the interests in accordance with the principles propounded by Mr Justice McCracken. In the end, Mr Justice Clarke inclined towards the plaintiffs because in the particular circumstances the consequences of their not obtaining an interlocutory injunction at this stage but succeeding at trial would be significantly greater than the corresponding consequences for the defendants of being injuncted pending trial but being released from that injunction upon being successful. The plaintiffs' victory was not total. The judge gave the defendants liberty to apply if they could devise a masthead that contained the word "Metro" but did not risk confusion with the plaintiffs' registered mark. Moreover, he urged the parties to get a move on with the trial indicating that her would be very likely to transfer the case to the new Commercial Court where the case could come on very quickly indeed.

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